No. S 132
Patents Act
(Chapter 221)
Patents (Amendment) Rules 1997
In exercise of the powers conferred by sections 42, 110, 115 and 116(3)(b) of the Patents Act, the Minister for Law hereby makes the following Rules:
Citation and commencement
1.  These Rules may be cited as the Patents (Amendment) Rules 1997 and shall come into operation on 1st April 1997.
Amendment of rule 9
2.  Rule 9 of the Patents Rules (R 1) is amended —
(a)by deleting paragraph (2) and substituting the following paragraphs:
(2)  Subject to rule 28, where the application in suit is for a patent under the Act, the applicant shall, within 16 months from the declared priority date, furnish to the Registry in respect of every application specified in the declaration its file number.
(2A)  Subject to paragraph (4), the applicant shall, within 22 months from the declared priority date, furnish to the Registry, in respect of every application specified in the declaration, a copy of that application duly certified by the authority with which it was filed or otherwise verified to the satisfaction of the Registrar.”.
(b)by deleting the words “and (2)” in the fourth line of paragraph (4) and substituting the words “, (2) and (2A)”;
(c)by deleting paragraph (5) and substituting the following paragraph:
(5)  Where a copy of an application is filed or treated as having been filed under paragraph (2A), (3) or (4) and that application is in a language other than English, a translation thereof into English, verified to the satisfaction of the Registrar as corresponding to the original text, shall be filed within 22 months from the declared priority date.”.
(d)by deleting the words “rule 86(3)(c)” in paragraph (6) and substituting the words “rule 86(4)(c);” and
(e)by inserting, immediately after the words “paragraph (2)” in paragraph (7), the words “, (2A)”.
Amendment of rule 19
3.  Rule 19 of the Patents Rules is amended by deleting paragraph (4) and substituting the following paragraph:
(4)  The title appearing in the request, specification and abstract shall be short, precise and indicate the matter to which the invention relates; and if in the opinion of the Registrar it fails to comply with this paragraph, the Registrar may reframe it so that it does so comply.”.
Amendment of rule 28
4.  Rule 28 of the Patents Rules is amended —
(a)by deleting paragraph (1) and substituting the following paragraph:
(1)  Where a new application is filed under section 20(3), 26 (6) or 47 (4) —
(a)subject to this rule, the requirements of rule 9(1) and (3) shall be complied with at the time of filing the new application;
(b)after the period of 16 months prescribed in rules 9(2) and 18, then, subject to this rule, the requirements of rules 9(2) and 18 shall be complied with at the time of filing the new application; and
(c)the requirements of paragraph 1(2)(a)(ii) and (3) of the Fourth Schedule, in a case to which they apply, shall be complied with on or before the time ascertained under the said paragraph 1(3) or the time of filing the new application, whichever is the later.”.
(b)by deleting the words “rule 9(5)” in paragraph (2) and substituting the words “rule 9(2A) and (5)”; and
(c)by deleting paragraph (3) and substituting the following paragraph:
(3)  Where a new application is filed under section 26(6) after —
(a)the period of 16 months prescribed in rule 9(2) or 18 (1); or
(b)the period of 22 months prescribed in rule 9(2A) and (5) as modified, in the case of an international application, by rule 86(4),
but within an extension of that period under rule 108(3) or (4) in respect of the earlier application, the requirements of rule 9(2), (2A) and (3), and rule 9(5) or 18, as the case may be, shall be complied with before the end of the extended period.”.
Amendment of rule 33
5.  Rule 33(1) of the Patents Rules is amended by deleting the words “In examining for the purposes of section 28(1) (“formalities examination”)” in the first and second lines and substituting the words “For the purposes of sections 28(1) (“formalities examination”) and 30(2)(a)”.
Amendment of rule 42
6.  Rule 42 of the Patents Rules is amended by deleting paragraph (2) and substituting the following paragraphs:
(2)  A request for an examination report under section 29(3) (in the case of an application under section 116(6)), 29(5)(a) or 29(8) shall not be treated as having been made unless the form required under paragraph (1) is accompanied by —
(a)a copy of the search report referred to in section 29(3) (in the case of an application under section 116(6)) or 29 (5)(a) or a copy of the international search report referred to in section 29(8) together with each of the documents referred to in that search report or international search report; and
(b)a list of references to the patent family members as corresponding to each of the non-English documents cited in the search report or international search report mentioned in paragraph (a).
(3)  The Registrar may require an applicant to furnish a translation into English, verified to the satisfaction of the Registrar as corresponding to the original text, of part or the whole of any document referred to in that search report or international search report within such period as the Registrar may specify.
(4)  Where an applicant does not comply with all the requirements of the Registrar within the period specified under paragraph (3), the request for an examination report shall be treated as having been abandoned.”.
Deletion and substitution of rule 44
7.  The Patents Rules are amended by deleting rule 44 and substituting the following rule:
Information for purposes of section 29 (4)
44.  The information prescribed for the purposes of section 29(4) shall be —
(a)that which is sufficient to indicate the result of an application filed before any one of the prescribed patent offices, and shall be in the form of —
(i)a certified copy of the patent granted by the patent office in question; or
(ii)other documents, to the satisfaction of the Registrar, setting out the final results of the search and examination as to substance; and
(b)any symbol of the International Patent Classification which has been or which in the opinion of the applicant should be allocated to the application.”.
Amendment of rule 46
8.  Rule 46 of the Patents Rules is amended by inserting, immediately after the words “date of” wherever they appear in paragraphs (4) and (5), the words “the Registrar’s letter enclosing”.
Amendment of rule 48
9.  Rule 48 of the Patents Rules is amended by deleting paragraph (b) and substituting the following paragraph:
(b)the description, claims, drawings and abstract,”.
Amendment of rule 49
10.  Rule 49 of the Patents Rules is amended by deleting paragraphs (2), (3) and (4) and substituting the following paragraph:
(2)  The applicant may, unless the Registrar otherwise requires, of his own volition, amend the description, claims, drawings and abstract at any time before payment of the fee for the grant of a patent, except that any such application for amendment shall not be made —
(a)after filing of the request for a search report referred to in section 29(1)(a) and before receipt of that report by the applicant;
(b)after filing of the request for a search and examination report referred to in section 29(1)(b) or (5)(b) and before receipt of that report by the applicant; or
(c)after filing of the request for an examination report referred to in section 29(3), (5)(a) or (8) and before receipt of that report by the applicant.”.
Amendment of rule 51
11.  Rule 51 of the Patents Rules is amended —
(a)by deleting paragraph (5) and substituting the following paragraph:
(5)  Where a patent to which section 116(3) applies has never been renewed under paragraph (1), the application of section 36(4) in relation to the patent is modified to the extent that the Registrar is not required to send a notice reminding the proprietor of the patent that the payment is overdue.”.
(b)by inserting, immediately after paragraph (7), the following paragraph:
(8)  Where an entry has been made in the register under section 53(2) in respect of a patent that licences under the patent are to be available as of right, Patents Form 53 shall be filed in relation to the renewal of the patent under this rule instead of Patents Form 15.”.
Amendment of rule 52
12.  Rule 52 of the Patents Rules is amended —
(a)by deleting the words “nature of” in the fourth line of paragraph (1) and substituting the words “reasons for”; and
(b)by inserting, immediately after paragraph (8), the following paragraph:
(9)  Where no notice of opposition is received by the Registrar under paragraph (2) or where such notice fails to comply with paragraph (3) and the Registrar is satisfied with the reasons for making the proposed amendments, he may give leave to the applicant to amend the specification of the patent.”.
Amendment of rule 53
13.  Rule 53 of the Patents Rules is amended —
(a)by deleting the words “the 12 months” in paragraph (1)(a) and substituting the words “30 months”;
(b)by inserting, immediately after paragraph (1), the following paragraph:
(1A)  Where the application is for the restoration of a patent to which section 116(3) applies, the evidence referred to in paragraph (1)(b) shall include —
(a)that which establishes that the patent remained in force in the United Kingdom at the time the first renewal was due if the patent had never been renewed under the Act; and
(b)a statutory declaration stating that the patent has not been revoked in the United Kingdom.”.
(c)by inserting, immediately after paragraph (4), the following paragraph:
(5)  Paragraph (1)(a) as amended by the Patents (Amendment) Rules 1997 shall also apply to any patent to which section 116(3) applies which had ceased to have effect before 1st April 1997.”.
New rule 53A
14.  The Patents Rules is amended by inserting, immediately after rule 53, the following rule:
Modified application of section 39 to patent to which section 116 (3) applies
53A.  Where a patent to which section 116 (3) applies has never been renewed under rule 51(1), the application of section 39(4) in relation to the patent is modified to the extent that the Registrar may, apart from the ground stated in section 39(4), by order restore the patent if the Registrar is satisfied that the failure to pay any renewal fee was unintentional and the proprietor of the patent has good cause for failing to renew the patent within the period prescribed.”.
Amendment of rule 55
15.  Rule 55(3) of the Patents Rules is amended by deleting sub-paragraph (a).
Amendment of rule 57
16.  Rule 57 of the Patents Rules is amended by deleting paragraph (2) and substituting the following paragraphs:
(2)  An application under paragraph (1) shall —
(a)where the transaction, instrument or event is an assignment, include an authorisation signed by or on behalf of the parties to the assignment; and
(b)where the transaction, instrument or event falls within section 43(3)(b), (c) or (d), include an authorisation signed by or on behalf of the person making the grant or giving assent in respect of that transaction, instrument or event.
(3)  Where an application does not include the authorisation referred to in paragraph (2)(a) or (b), the application shall, unless the Registrar directs, be accompanied by —
(a)a certified copy of any document which establishes the transaction, instrument or event; or
(b)a certified copy of such extracts from such document as suffice to establish the transaction, instrument or event.
(4)  The Registrar may require such other information to be furnished for an application under paragraph (1) as he thinks necessary.”.
Amendment of rule 72
17.  Rule 72 of the Patents Rules is amended by deleting the words “and shall be accompanied by Patents Form 15 and fees to the amount of the balance of all renewal fees which would have been payable if the entry had not been made”.
Deletion and substitution of rule 75
18.  The Patents Rules are amended by deleting rule 75 and substituting the following rule:
Action by Registrar on cancellation in register as to licence of right
75.—(1)  Where the Registrar has received an application from the proprietor of a patent to cancel an entry in the register under section 54(1), the Registrar shall notify the proprietor of the patent who shall, within 2 months from the date of the Registrar’s notification to him, pay fees equal to the amount of the balance of all renewal fees which would have been payable if the entry had not been made, accompanied by a copy of the Registrar’s notification.
(2)  Upon receipt of the fees under paragraph (1), the Registrar may proceed to cancel the entry if he is satisfied that there is no existing licence under the patent or that all licensees under the patent consent to the application.
(3)  Where the Registrar cancels an entry in the register in respect of a patent under section 54(3), the Registrar shall notify the proprietor of the patent who shall, within 2 months from the date of the Registrar’s notification to him, pay fees equal to the amount of the balance of all renewal fees which would have been payable if the entry had not been made, accompanied by a copy of the Registrar’s notification.”.
Amendment of rule 86
19.  Rule 86(4) of the Patents Rules is amended —
(a)by deleting the words “rule 9(5)” in sub-paragraph (c) and substituting the words “rule 9(2A) and (5)”;
(b)by deleting the words “21 months” in the second line of sub-paragraph (c) and substituting the words “22 months”;
(c)by inserting, immediately after the word “before” in the third line of sub-paragraph (d), the words “or at”; and
(d)by deleting the words “rule 51 bis 2(b)” in the sixth line of sub-paragraph (d) and substituting the words “rule 51 bis 1(d)”.
Amendment of rule 90
20.  Rule 90 of the Patents Rules is amended by deleting paragraph (2) and substituting the following paragraph:
(2)  Where any party to any proceedings before the Registrar appoints an advocate and solicitor or any other person —
(a)to act on his behalf; or
(b)to act on his behalf in substitution for another,
the advocate and solicitor or person acting on his behalf shall file Patents Form 41 on the first occasion when he acts on behalf of the party to the proceedings before the Registrar.”.
Amendment of rule 103
21.  Rule 103 of the Patents Rules is amended by deleting paragraph (b) and substituting the following paragraphs:
(b)in any part of the Commonwealth except Singapore, before any judge, justice of the peace, or any officer authorised by law to administer an oath for the purpose of any legal proceedings; and
(c)elsewhere, before a Singapore consul or vice-consul, or other person performing the functions of a Singapore vice-consul, or before a notary public, judge or magistrate, or any officer authorised by law to administer an oath for the purpose of any legal proceedings.”.
Amendment of rule 108
22.  Rule 108 of the Patents Rules is amended —
(a)by deleting paragraph (1) and substituting the following paragraphs:
(1)  The times or periods prescribed by these Rules for doing any act or taking any proceedings or specified by the Registrar thereunder, other than the times or periods prescribed in the provisions mentioned in paragraphs (2) and (3), may, on written request by a party, be extended by the Registrar if he thinks fit, upon such notice to the parties and upon such terms as he may direct.
(1A)  Any extension may be granted under paragraph (1) notwithstanding that the time or period for doing such act or taking such proceedings has expired.”.
(b)by inserting, immediately after “74(1)” in the third line of paragraph (2), “, 75”; and
(c)by deleting paragraph (3) and substituting the following paragraphs:
(3)  A time or period prescribed in rules 9(2), (2A) and (5) (including the period therein prescribed as substituted by rule 86(4)(c) or paragraph (a) of the Seventh Schedule), 18(1) (including the period therein prescribed as substituted by paragraph (a) of the Seventh Schedule), 26, 28 (except so far as it relates to rule 9(1)), 38, 43 (including the period therein prescribed as substituted by paragraph (l) of the Seventh Schedule), 47, 53 (4), 86(1), (6) and (8), 97(2)(c) and paragraph 1(3) of the Fourth Schedule shall, if not previously extended, be extended for a period not exceeding 3 months upon filing Patents Form 45 before the end of the period for which extension is sought.
(3A)  Where in any proceedings more than one such time or period referred to in paragraph (3) expires on the same day (but not otherwise), those times or periods may be extended upon the filing of a single Patents Form 45.”.
Amendment of rule 112
23.  Rule 112 of the Patents Rules is amended —
(a)by deleting the words “and paragraph (4),” in the first and second lines of paragraph (1); and
(b)by deleting paragraph (4).
Amendment of First Schedule
24.  The First Schedule to the Patents Rules is amended —
(a)by deleting item 20 and substituting the following item:
 
“20.On application for the restoration of a patent
500
19”;
(b)by deleting item 25 and substituting the following item:
 
“25.On application to register or give notice of a transaction, instrument or event affecting the rights in a patent or an application for a patent — for each patent or application for a patent affected by such transaction, instrument or event
50
24”;
(c)by deleting item 47 and substituting the following item:
 
“47.On request for extension of each time or period under rule 108(3) — for each month or part of a month for which the extension is sought
200
45”; and
(d)by inserting, immediately after item 54, the following item:
 
“55.On payment of renewal fee under section 53 or 54 —
 
53.
 
(a)Before the expiration of the 4th year from the date of filing of the application for the patent
75
 
 
(b)Before the expiration of the 5th year from the date of filing of the application for the patent
75
 
 
(c)Before the expiration of the 6th year from the date of filing of the application for the patent
75
 
 
(d)Before the expiration of the 7th year from the date of filing of the application for the patent
125
 
 
(e)Before the expiration of the 8th year from the date of filing of the application for the patent
125
 
 
(f)Before the expiration of the 9th year from the date of filing of the application for the patent
125
 
 
(g)Before the expiration of the 10th year from the date of filing of the application for the patent
175
 
 
(h)Before the expiration of the 11th year from the date of filing of the application for the patent
175
 
 
(i)Before the expiration of the 12th year from the date of filing of the application for the patent
175
 
 
(j)Before the expiration of the 13th year from the date of filing of the application for the patent
225
 
 
(k)Before the expiration of the 14th year from the date of filing of the application for the patent
225
 
 
(l)Before the expiration of the 15th year from the date of filing of the application for the patent
225
 
 
(m)Before the expiration of the 16th year from the date of filing of the application for the patent
275
 
 
(n)Before the expiration of the 17th year from the date of filing of the application for the patent
275
 
 
(o)Before the expiration of the 18th year from the date of filing of the application for the patent
275
 
 
(p)Before the expiration of the 19th year from the date of filing of the application for the patent
325”.
 
Amendment of Second Schedule
25.  The Second Schedule to the Patents Rules is amended —
(a)by deleting Patents Form 1 and substituting the following Form:
FORM 1
UNKNOWN
UNKNOWN
UNKNOWN”;
(b)by deleting Patents Form 8 and substituting the following Form:
FORM 8
UNKNOWN
UNKNOWN”;
(c)by deleting Patents Form 15 and substituting the following Form:
FORM 15
UNKNOWN”;
(d)by deleting Patents Form 19 and substituting the following Form:
FORM 19
UNKNOWN”;
(e)by deleting Patents Form 24 and substituting the following Form:
FORM 24
UNKNOWN
UNKNOWN”;
(f)by deleting Patents Form 30 and substituting the following Form:
FORM 30
UNKNOWN”;
(g)by deleting Patents Form 45 and substituting the following Form:
FORM 45
UNKNOWN”;
(h)by inserting, immediately after Patents Form 52, the following Form:
FORM 53
UNKNOWN”.
Amendment of Fourth Schedule
26.  The Fourth Schedule to the Patents Rules is amended by deleting the words “, and a copy of the receipt issued by the international depositary authority in accordance with rule 7 of the Regulations under the Budapest Treaty is filed” in paragraph 1 (2) (a) (ii).
Deletion and substitution of Fifth Schedule
27.  The Patents Rules is amended by deleting the Fifth Schedule and substituting the following Schedule:
UNKNOWN
Amendment of Seventh Schedule
28.  The Seventh Schedule to the Patents Rules is amended —
(a)by deleting the words “no later than the time ascertained under the said paragraph 1(3) and the time of filing the application” in paragraph (a)(ii) and substituting the words “on or before the time ascertained under the said paragraph 1(3) or the time of filing the application, whichever is the later”;
(b)by inserting, immediately after the word “application” at the end of paragraph (h), the words “, provided that the application in Singapore relates to the same or substantially the same invention as the foreign application at the time of search”; and
(c)by deleting the words “the substantive examination report which is issued in respect of the foreign application” in the third, fourth and fifth lines of paragraph (i) and substituting the words “the examination report resulting from an examination as to substance which is issued in respect of the foreign application, provided that the application in Singapore relates to the same or substantially the same invention as the foreign application at the time of search and at the time of examination, respectively”.
[G.N. No. S 224/96]
Made this 21st day of March 1997.
GOH KIM LEONG
Permanent Secretary,
Ministry of Law,
Singapore.
[LAW 18/001/001 Vol. 2; AG/LEG/SL/221/97/1 Vol. 1]